/ Brexit becomes effective: How to Validate your Community Trademarks in the United Kingdom during 20214 January, 2021
As a consequence of Brexit, which became effective on December 31st, 2020, trademarks registered in the European Community, international trademark registrations designated by the European Union Intellectual Property Office (EUIPO) and Community designs, ceased to have effect in the United Kingdom as of January 1st, 2021, keeping their validity in the other 27 member countries of the European Union (EU).
Notwithstanding the foregoing, designs and Community trademarks registered with the EUIPO before December 31st, 2020, shall be automatically cloned in the United Kingdom and assigned a new registration number at the national level, which shall grant their holders the same rights as the pre-existing registrations in the United Kingdom. All dates of the original registration shall be maintained, such as, filing dates, priority and seniority.
What will happen to the CTM applications currently in process?
For trademark applications in the EU pending on December 31st, 2020, cloning must be expressly requested within a period of 9 months expiring on September 30th, 2021. Thus, when the cloning requirement of the Community application is carried out before the United Kingdom Trademark Office (UKIPO), such applications shall maintain the application dates before the EUIPO, as well as their international priority dates if applicable, continuing with their parallel processing before both offices separately.
As we have anticipated in previous newsletters during the past year, we will continue to inform our clients and correspondents about the impact of Brexit on registered designs and trademarks or pending applications with protection in the European Union.
Should you have any questions about the scope of protection or interest in registering a trademark in the EU and/or the UK, please contact Alessandri’s international team.